Ex Parte SchneiderDownload PDFPatent Trial and Appeal BoardJan 15, 201510833431 (P.T.A.B. Jan. 15, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/833,431 04/28/2004 Charles A. Schneider P-778 /HSCH 200010US01 4645 27885 7590 01/15/2015 FAY SHARPE LLP 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER KANTAMNENI, SHOBHA ART UNIT PAPER NUMBER 1627 MAIL DATE DELIVERY MODE 01/15/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte CHARLES A. SCHNEIDER __________ Appeal 2012-005523 Application 10/833,431 Technology Center 1600 __________ Before LORA M. GREEN, JEFFREY N. FREDMAN, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 3, 4, 6, 8, 10, 12–14, 18, and 21–24. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 The Real Party in Interest is H&S Chemical Company, Inc. (App. Br. 1). Appeal 2012-005523 Application 10/833,431 2 STATEMENT OF THE CASE The claims are directed to methods of sanitizing the teat area of a dairy animal with a formulation of Chloramine T. Claim 1, the only independent claim, reads as follows: 1. A process for sanitizing the teat area of a dairy animal for milking which comprises: providing a mixture of Chloramine T, a coloring agent, and a skin conditioning agent; adding the mixture to water to form a solution, wherein the concentration of Chloramine T is less than about 5 weight percent of the solution; and applying the solution to the teat area of said animal in order to sanitize the teat area during milking without causing harmful side effects to the dairy animal. Issue The Examiner has rejected claims 1, 3, 4, 6, 8, 10, 18, and 21–24 under 35 U.S.C. § 103(a) as obvious over the combination of Greff2 and Pugliese3 (Ans. 5–6). The Examiner has also rejected claims 12–14 under 35 U.S.C. § 103(a) as obvious over the combination of Greff and Pugliese, and further in combination with Appel4 (Ans. 7). We focus our initial analysis on independent claim 1. The issue presented is: Has the Examiner established by a preponderance of the evidence that Greff and Pugliese would have made obvious the modification of Greff’s Chloramine T composition to further comprise a coloring agent and thereby arrive at the method of claim 1? 2 US 6,123,953, patented Sept. 26, 2000. 3 US 4,049,830, patented Sept. 20, 1977. 4 Appel et al., 75 WIENER TIERARZTLICHE MONATSSCHRIFT 365–69 (1988). Appeal 2012-005523 Application 10/833,431 3 Findings of Fact FF1. The Examiner finds that Greff discloses that “mastitis in milk bearing animal[s] can be prevented by immersion or massaging of teats with a composition comprising chloramine T . . . or other bactericidal substances, and [a] skin care product” (Ans. 5 (citing Greff, col. 6, claim 11, and col. 5, ll. 38–47)). FF2. The Examiner finds that Greff discloses “aqueous alkane-1,2- diol base compositions which . . . can be added to teat dip compositions comprising chloramine T, iodine, i[o]dophore or other bactericidal substances, and [a] skin care product” (id. (citing Greff, col. 4, ll. 24–66, col. 5, ll. 38–47, and Ex. 4)). FF3. Greff discloses the “use of alkane-1,2-diols for inactivating skin microorganisms by topical application” (Greff, abstract). FF4. Greff discloses that the alkane-1,2 diols can be used to inactivate microorganisms that cause mastitis in dairy animals, and that its activity can be strengthened by a synergistic interaction with gels, such as glycerol poly(meth)acrylate (id.). FF5. Greff discloses that compositions of the invention “can be used unmixed or incorporated in other basic gels (carbomeres . . . or polysaccharide gels, alginates, xanthan gums, etc . . . ) . . . for the treatment . . . of the teats of cows or other milk-giving animals” (id. at col. 3, ll. 1–8). FF6. Greff discloses that the compositions “containing these gels have the following advantages: they are colorless . . . they are non-toxic, non-irritating . . . and above all they have a high antimicrobial activity against germs found in the environment of the farm” (id. at col. 3, ll. 9–17). Appeal 2012-005523 Application 10/833,431 4 FF7. Greff discloses that the “alkane-1,2-diol base compositions, with or without gel of the glyceryl polymethacrylate type, can be added to any substance which is useful or conventionally preferred to be used in the . . . prevention of mastitis by dipping, spraying or massage of the teats: iodine or iodophores, chloramine T,” among others (id. at col. 5, ll. 38–47.) FF8. Greff discloses, in Examples 3 and 4, example compositions for the protection of udders against mastitis, with the compositions having a pH of 5 and 5.5, respectively (id. at col. 4, l. 36–col. 5, l. 15). FF9. The Examiner finds that Greff does not teach “the coloring agent in the teat dip compositions . . . [and] the particular amounts of Chloramine T, and coloring agent” (Ans. 5). FF10. The Examiner finds that Pugliese discloses “teat dip compositions for application to cow udders [that] contain 0.07 % by weight of colorants such as FD&C Yellow” (id. (citing Pugliese, col. 6 and Ex. 5)). FF11. The Examiner finds that Pugliese discloses that “the dye will color the teats of treated cows yellow, giving a check on which cows have been treated” (id. (citing Pugliese, col. 6, ll. 45–52)). FF12. Pugliese discloses “a bovine teat dip . . . to control, prevent or treat bovine mastitis” (Pugliese, col. 1, ll. 6–9). FF13. Pugliese discloses that “the dip preparation has a pH between 5.0 and 5.8. These pH values are highly important because they are close to the pH value of the teat skin itself (5.0–5.6) and the natural defense mechanisms are most effective at that range” (id. at col. 3, ll. 1–5). Appeal 2012-005523 Application 10/833,431 5 FF14. Pugliese, in Example 5, discloses a bovine teat dip comprising a dye and discloses that the “dye will color the teats of treated cows yellow, giving a check on which cows have been treated” (id. at col. 6, ll. 32–49). FF15. The Examiner concludes that, in view of Pugliese, it “would have been obvious to a person of ordinary skill in the art . . . to employ coloring agent in the teat dip compositions taught by Greff with the expectation of determining which cows have been treated” (Ans. 5–6). Analysis Appellant argues that the combination of Greff and Pugliese would not have made obvious the sanitizing process of claim 1 that requires “providing a mixture of Chloramine T, a coloring agent, and a skin conditioning agent” because “Greff teaches away from the use of the coloring agent of Pugliese” (App. Br. 4). Appellant argues that “Greff teaches that his compositions are colorless and that being colorless is a necessary property of Greff’s compositions when said compositions are used in teat dips” (id. (citing Greff, col. 3, ll. 9–22)). Appellant’s arguments are not persuasive. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Appeal 2012-005523 Application 10/833,431 6 Id. at 417. In determining whether obviousness is established by combining the teachings of the prior art, “the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)). Here, Greff discloses antimicrobial compositions for application to the teat area to prevent mastitis (FFs 3 and 4). Greff discloses that the compositions may be used alone or may be incorporated into basic gels such as carbomeres and polysaccharide gels, among others, wherein the Appeal 2012-005523 Application 10/833,431 7 compositions containing the gels have the advantages that they are colorless, are non-toxic, and non-irritating (FF 6). Greff does not discuss any particular advantages of teat treatment with colorless compositions. Pugliese discloses a bovine teat dip compositions to control, prevent or treat bovine mastitis (FF 12), and Pugliese also discloses that a dye may be added to the compositions to color the teats and provide an indication which cows have been treated (FF 14). In view of the disclosures in Greff and Pugliese, it would have been well within the level of skill of the ordinary artisan to balance the pros and cons of adding a dye to the treatment compositions of Greff. The fact that Greff discloses that colorless gels may have advantages would not lead one of skill in the art away from adding a dye in those situations where having an indicator dye in the composition would be beneficial. Thus we affirm the rejection of claim 1 as being obvious over the combination of Greff and Pugliese. Claims 3, 4, 6, 8, 10, 18, and 21–23 have not been argued separately from claim 1 and therefore fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii). Appellant also argues the rejection of claim 24. Claim 24 depends from claim 1 and further requires that “the solution has a pH of about 9.” The Examiner finds that, because the combination of Greff and Pugliese “renders the claimed composition obvious, the property of such a claimed composition will also be rendered obvious . . . since the properties, namely the pH of about 9 as in claim 24, are inseparable from its composition” (Ans. 6). Appeal 2012-005523 Application 10/833,431 8 Appellant argues that neither Greff nor Pugliese “teaches a solution having a pH of about 9” (App. Br. 5). Appellant argues that the “only disclosure of a pH for Greff’s compositions is in Examples 3 and 5, which have a pH of 5” (id.). Appellant argues that “Pugliese requires his bovine teat dip to have a composition approximating that of teat skin . . . [and] also discloses . . . that the pH value of teat skin is from 5.0 to 5.6 and that the pH of his dip is from 5.0 to 5.8” (id. (citing Pugliese at col. 1, ll. 58–60 and col. 3, ll. 1–5)). Appellant argues that “Pugliese teaches this range is critical because the animal’s natural defense mechanisms are most effective within that range” (id.). Appellant argues that, therefore, “Pugliese also teaches away from a solution having a pH of about 9” (id.). We agree with Appellant that the Examiner has not adequately explained how the combination of Greff and Pugliese would have made obvious the method of claim 24 with a composition having a pH of about 9, as Pugliese expressly discloses that a teat treatment composition should be about 5.0 to 5.8 to be close to the pH value of the teat skin (FF 13), and Greff discloses compositions that have a pH of 5 or 5.5 (FF 8). The Examiner’s theory appears to be that any Greff composition that comprises water, a skin conditioning agent, and Chloramine T at a concentration of less than about 5%, to which a coloring agent was added, would have a pH of about 9. The Examiner, however, has not provided a sufficient scientific basis to support this inherency analysis. See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”) Appeal 2012-005523 Application 10/833,431 9 Therefore, we reverse the rejection of claim 24 as being obvious over the combination of Greff and Pugliese. The Examiner has also rejected claims 12–14 under 35 U.S.C. § 103(a) as obvious over the combination of Greff and Pugliese, and further in combination with Appel (Ans. 7). Claims 12–14 depend from claim 1. We also affirm this rejection because Appellant has not argued claims 12–14 separately from claim 1, or provided a separate argument based on Appel (App. Br. 7). Conclusion of Law The preponderance of the evidence supports the Examiner’s conclusion that Greff and Pugliese would have made obvious the modification of Greff’s Chloramine T composition to further comprise a coloring agent and thereby arrive at the method of claim 1. SUMMARY We affirm the rejection of claims 1, 3, 4, 6, 8, 10, 12–14, 18, and 21– 23 under 35 U.S.C. § 103(a). We reverse, however, the rejection of claim 24 under 35 U.S.C. § 103(a). TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART bar Copy with citationCopy as parenthetical citation